White Heron

Protecting an ‘unprotectable’ trade mark

Whittern Farm’s Jo Hilditch decided to try her hand at making an artisan blackcurrant liqueur, and British Cassis was born. The product is now stocked in supermarkets, wine merchants, cocktail bars and high end department stores. It took a huge amount of effort to get the product off the ground, including appearances on Dragon’s Den and BBC Countryfile. A rebrand in 2014 and the construction of a purpose-built production facility has helped the product to take off.

Case Study

Case Type

Trade mark application

Action

Proving acquired distinctiveness

Outcome

Registered ‘impossible’ trade mark

Issue:

White Heron approached us to obtain protection for its brand, to prevent poor imitations emerging as it expanded nationally and internationally. Given that ‘cassis’ is French for blackcurrant, there were concerns that obtaining protection for a potentially descriptive trade mark would be impossible.

Action:

Protection for a stylised version of the words was initially contemplated so that White Heron would obtain some protection for the mark. An application was filed to protect the house mark WHITE HERON. However, if we were able to secure protection for the words alone, White Heron would have the broadest possible protection for its valuable brand.

Through initial discussions, it quickly became clear that substantial turnover figures had been achieved over the past decade and advertising figures were also impressive. More importantly (and persuasively), White Heron could also provide evidence of awards won, recognition by third parties (including large department stores and supermarkets) and television appearances on Dragon’s Den, Countryfile and The Hairy Bikers (with proven viewing figures of millions).

The most influential piece of evidence was that Jo Hilditch is the chair of the Blackcurrant Foundation, which represents all 40 British blackcurrant growers. This is a small industry and the majority of British blackcurrants are purchased by Ribena. Consequently, all potential competitors were aware of the reputation of the trade mark and the fact that it belonged solely to the applicant.

Outcome:

Following a submission of witness statement to the UK IPO which presented all of this evidence of acquired distinctiveness, the mark BRITISH CASSIS was registered. This was an interesting example of where evidence of reputation can be key and how British farmers can obtain protection for areas that they expand into when looking to mitigate their exposure or reliance on one crop or buyer.

For more information please contact Alison Cole ajc@udl.co.uk.

020 3904 3365

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